Thursday, 8 December 2011

Both opponents filed an appeal against the decision of the Opposition Division (OD) to maintain the patent in amended form. About one year after having filed his statement of grounds of appeal, opponent 1 filed document D34, an article published in the journal of the Entomological Society of America in 1978. He requested the document to be admitted into the appeal proceedings and, as an auxiliary request, that the case be remitted to the OD.

The Board found D34 to be highly relevant because it prima facie disclosed all the features of use and method claims 1 and 15 and because it apparently indicated that the invention could not be carried out over the whole scope of the claims. It therefore admitted it into the proceedings.

The Board then dealt with the question whether the case should be remitted and whether costs should be apportioned:

*** Translation of the French original ***

[13] [Opponent 1] has not argued very strongly against a remittal. He has even filed an auxiliary request for a remittal if document D34 was admitted into the proceedings, as it indeed was. His only argument against a remittal, i.e. that the document had not been filed belatedly because it had been filed as soon as it had been discovered, is not convincing. Otherwise, any party could wait for the moment it deems appropriate for filing evidence, without giving any thought to the legal requirements concerning, for instance, the time limit for filing an appeal (A 99(1) and R 76(2)(c)) or to the completeness of the case on which an appeal is based (Articles 12(2) and (4) RPBA). Obviously, it is unacceptable to allow parties to decide themselves on what is belated and what is not.

[14] In the present case, [opponent 1] has found document D34 only on August 18, 2009, and has filed it immediately afterwards. The sole reason for not having done so at an earlier stage was that the document had only been found when carrying out a search on an apparently unrelated topic. However, it cannot be accepted for such a situation to turn to the disadvantage of the [patent proprietor] who could expect the statement of grounds of appeal to inform him on the complete case made against him (see Article 12(2) RPBA). The Board agrees with the [patent proprietor’s] submission that if the document had been produced together with the statement of grounds of appeal, there would not have been any necessity for a remittal: it would not even have been envisaged.

[15] As the document changes the case in a significant way […] and as the sole argument against a remittal is unacceptable, the Board comes to the conclusion that it is appropriate to remit the case.

Apportionment of costs

[16] The [patent proprietor] has requested apportionment of costs so that the [opponent 1] would pay all his costs, i.e. not only the costs related to the present appeal, but also to the additional proceedings before the OD. As far as the costs related to the appeal are concerned, he has argued that the fact that document D34 was taken into account changed the case in such a way that all the expenses related to the appeal were made in vain (en pure perte). [Opponent 1] has countered this request by pointing out that apportionment of costs was only justified if there had been an abuse of procedure, and that there had not been such an abuse in the present case.

[17] The Board does not endorse this argument, simply because of Article 16(1) RPBA:

(1) Subject to A 104(1), the Board may on request order a party to pay some or all of another party’s costs which shall, without limiting the Board’s discretion, include those incurred by any

(a) amendment pursuant to Article 13 to a party’s case as filed pursuant to Article 12(1);

(b) extension of a time limit;

(c) acts or omissions prejudicing the timely and efficient conduct of OPs;

(d) failure to comply with a direction of the Board;

(e) abuse of procedure.

[18] These provisions clearly show that an abuse of procedure is only one item among a non-exhaustive list of situations that can justify apportionment of costs. The Board agrees that the late filing of document D34 by [opponent 1] does not constitute an abuse of procedure, but this is not sufficient for avoiding apportionment. As a matter of fact, the non-exhaustive list of Article 16(1) RPBA also mentions the case of an amendment pursuant to Article 13 to a party’s case, i.e. an amendment made after the filing of the statement of grounds of appeal or of the response thereto. As such amendments are allowed only if the Board choses to do so, they do not always result in apportionment of costs, but it is clear that the RPBA considers apportionment of costs in a situation that is identical to the present case.

[19] [Opponent 1] has also pointed out that document D34 could not have been found with the available search tools at the beginning of the opposition proceedings. This argument has only been made during the oral proceedings, without any proof. However, even if this argument is accepted provisionally, it cannot have any impact on the present case because the [patent proprietor’s] request only concerns the costs related to the appeal and the additional opposition proceedings and does not extend to the costs related to the prior opposition proceedings.

[20] [Opponent 1] has not alleged that the results that could be obtained with the search tools available in August and September 2009 (when D34 was found and filed) could not have been obtained during the period of four months ending on September 28, 2008 (when the time limit for filing the statement of grounds of appeal expired). As a matter of fact, it follows from what the Board has stated in points [13] to [15] above that [opponent 1] could (and should) have filed document D34 together with his statement of grounds of appeal. This misbehaviour (manquement) cannot be excused ; as it has created additional costs for the [patent proprietor], the Board is of the opinion that apportionment of costs is appropriate.

[21] However, the Board does not share the [patent proprietor’s] opinion that [opponent 1] has to pay all the costs related to the appeal and for the first instance proceedings to come. As far as the costs related to the appeal are concerned, the Board is of the opinion that at most the expenses related to the [patent proprietor’s] response to the statements of grounds of appeal filed by the [opponents] qualify as having been made in vain. As pointed out by the [patent proprietor], the remittal could have been avoided if at least one of the statements had invoked D34. Then the [patent proprietor] would have been aware of the whole case made against him and could have treated all its elements in his response. As document D34 has only been filed at a later stage, and as its relevance is such that it changes the case to the point that a remittal to the OD is justified, the expenses related to this response were made in vain and it equitable to let [opponent 1] bear those costs.

[22] Regarding the costs related to the first instance proceedings to come, the Board notes that certain Boards of appeal have sometimes ordered apportionment of costs for expenses to be made in the future (see T 847/93 [4] and T 715/95 [4]). Apportionment of costs is always at the discretion of the Board, and it may well be that those Boards were confronted, in the cases cited above, with different situations. However, the Board feels unable to arbitrate, at the appeal stage, on apportionment of costs that would arise in subsequent proceedings, on the progress (déroulement) and outcome of which one can only speculate for the time being. Each case of this type comprises some uncertainty, which makes it preferable to wait for the outcome of the subsequent proceedings before deciding on apportionment of costs. In the present case, if document D34 turns out to be decisive for the outcome of the opposition, then it would be more equitable to apportion the costs of the earlier proceedings rather than those of the subsequent proceedings. Therefore, the Board considers that in the present case apportionment of costs relating to the opposition proceedings, if such costs are to be apportioned, has to be decided by the OD at the end of the opposition, based on the situation that prevails at that time, and the requests that will have been submitted to it. Decisions T 758/99 [2], T 890/00 [5, 4th §] and T 1182/01 [4.3] are examples where the Boards have left it to the OD to decide on apportionment of costs arising in subsequent first instance proceedings.

[… Opponent 1] has to bear the costs which the [patent proprietor] had to bear in relation to his response […] to the statement of grounds of appeal.

Should you wish to download the whole decision (in French), just click here.

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